Oppose or Cancel?
There are a lot of reasons that trademark applications can be refused at the USPTO. Trademark law is based on many principles such as prior use, distinctiveness, likelihood of confusion and other issues that are not just common sense. Strong marks are favored by the courts and by the USPTO because the elements that make them strong follow the law. Weak marks are disfavored because they generally involve giving rights to someone trying to take exclusive use of something that should remain available for common use.
The same principles that govern whether or not a trademark registers also govern whether or not a trademark can be successfully opposed or cancelled.
What is the Difference Between A Trademark Opposition and Trademark Cancellation?
Mostly the timing but also the grounds that are available.
Trademarks on the Principal Register are published for opposition BEFORE they register and may be opposed by anyone who has standing for an opposition and grounds for an opposition. In a similar fashion, trademarks that have been registered (AFTER registration) may be challenged for cancellation by anyone who has standing for a cancellation and grounds for a cancellation.
Generally speaking, any ground that negates the defendant's right to registration may be raised for either opposition or cancellation except that marks that have been registered on the Principal Register for more than five years and are incontestable trademarks have more limited grounds available for cancellation. Some exceptions apply . See Opposition Steps/Cancellation Steps for more information.
Standing is why a person (or entity) believes it is or will be damaged by the registration sought to be opposed or canceled. At the initial pleading stage, all that is required is that a plaintiff allege facts sufficient to show a “real interest” in the proceeding, and a “reasonable basis for its belief of damage." To plead a "real interest," plaintiff must allege a "direct and personal stake" in the outcome of the proceeding. The allegations in support of plaintiff's belief of damage must have a reasonable basis "in fact."
What are the Steps in a Trademark Opposition Process?
How does a Trademark Opposition Begin? The first step in a trademark opposition is to file a Notice of Opposition during the Opposition Period or file for an extension of time to file a Notice of Opposition. If an extension of time is applied for, the Notice of Opposition must be filed within the given time frame by the original party that filed for the extension. The Notice of Opposition is the beginning of the Pleadings Stage which consists of:
What is in a Notice of Opposition? The Notice of Opposition sets out (usually in numbered paragraphs) identifying information about the opposer including its allegations for standing and grounds for opposition. Suggested format for Opposition from USPTO.
What comes after the Pleadings Stage? The next stages are the Discovery Conference, Discovery (Initial Disclosures, Expert Disclosures), Plaintiff's Pretrial Disclosures, Plaintiff's 30-day Trial Period, Defendant's Pretrial Disclosures ,Defendant's 30-day Trial Period, and Plaintiff's Rebuttal.
What is an Extension of Time to Oppose? Just as any person, whether natural or juristic who believes that he, she, or it would be damaged by the registration of a mark upon the Principal Register may, upon payment of the prescribed fee, file an opposition in the Office, stating the grounds therefor, within 30 days after the publication of the mark in the Official Gazette for purposes of opposition, also similarly, any person, whether natural or juristic, who believes that he, she, or it would be damaged by the registration of a mark upon the Principal Register may file a written request to extend the time for filing an opposition. The first request can be for 30 days with no reason necessary or 90 days for good cause or consent. If the first request was for 30 days, a second request for 60 days can be made for good cause or consent. Ninety (90) additional days for a maximum of 180 days may be obtained with consent or under extraordinary circumstances.
What if you miss the time limit to oppose or to file for an extension of time to oppose? Time limits for filing Notices of Opposition or Requests for Extensions of Time to Oppose are strictly enforced. The next option may be to file a petition to cancel, after the trademark registers. It takes about 3 months from the close of the opposition period (including extensions) until a registration issues if the case is not an Intent to Use case. It may take much longer for an Intent to Use case to mature to registration. Check the TM web site or status line to see if it has registered.
What does “Good Cause” mean when referring to an extension of time to oppose someone in a trademark opposition?
Circumstances that may constitute good cause include but are not limited to additional time to investigate claim, additional time to confer with counsel, additional time to settlement discussions, additional time to seek counsel applicant's consent to the extension, settlement negotiations between the parties, the filing of a letter of protest by the potential opposer, an amendment of the subject application, the filing of a petition to the Director from the grant or denial of a previous extension, extraordinary circumstances and civil litigation between the parties.
The ESTTA form includes radio buttons to click for several “good cause” reasons:
The potential opposer needs additional time to investigate the claim
The potential opposer needs additional time to confer with counsel
The potential opposer is engaged in settlement discussions with applicant
The potential opposer needs additional time to seek counsel to represent it in this matter
What is in an Answer to a Notice of Opposition?
In its answer the applicant is required to admit or deny the allegations in the Notice of Opposition. The applicant can also assert affirmative defenses. Affirmative defenses may include unclean hands, laches, estoppel, acquiescence, fraud, mistake, prior registration defense, prior judgment, or any other matter constituting an avoidance or affirmative defense.
Someone else filed for an extension of time to oppose, does that mean that I have more time to oppose also? Not unless there is still time in the original Opposition Period for you to file your own extension of time. TBMP 206.01 An extension of time to oppose is a personal privilege which inures only to the benefit of the party to which it was granted and those in privity with that party. (A party cannot claim the benefit of an extension granted to another (unrelated) party. Cass Logistics Inc. v. McKesson Corp., 27 USPQ2d 1075, 1077 (TTAB 1993) )
Can I just tell the examiner who refused my application because of a likelihood of confusion with an already pending or registered mark that I was using the trademark before they were? A trademark examiner cannot take into account information that is outside of the realm of their duties and decide to exert the rights of someone new applying for a trademark over someone who is already registered or whose application was already pending. At the USPTO, only the Trademark Trial and Appeal Board can do this and only in an Opposition or Cancellation Proceeding at the proper stage of one of these proceedings. If you believe that there is no likelihood of confusion, you can argue this position in your answers to the office action and file an appeal to the TTAB within six months of the mailing date of the final refusal to register. The trademark examiner can suspend your application pending the outcome of an Opposition or Cancellation proceeding only if your application is still LIVE and not abandoned so the timing of the filing of the Notice of Opposition or Petition to Cancel may be very important. (The filing of the Notice of Opposition is always important as it can only take place during the Opposition Period or during an extension of time to file by the same party.)
Opposition or Court? An opposition proceeding is similar to a court proceeding in many respects except that it is filed with the Trademark Trial and Appeal Board (TTAB), an administrative tribunal of the USPTO. An Opposition with the TTAB is less expensive than a court proceeding. An opposition is based on a written record only (in most cases-oral hearings are rare but can be requested). A court can decide registrability issues and other issues such as infringements while the TTAB can only decide registerability. Whether an Opposition or Court case is the best answer is something much more complex than an FAQ can answer!